• Court Diary

    All at Sea on Use?

    Under Section 46(1) of the UK Trade Marks Act (equivalent to Article 10(1) of the Trade Marks Harmonisation Directive (89/104/EEC)) it is possible to revoke a UK trade mark registration if the registered mark has not been put to genuine use in the UK in respect of the registered goods or services for a continuous period of five years from the date of registration.

    The meaning of the phrase "genuine use" was considered in a recent English High Court appeal (La Mer v Laboratoires Goemar) which concerned an application for revocation (under Section 46(1) of the 1994 Trade Marks Act) of a UK trade mark registration for Laboratoire De La Mer claiming inter alia cosmetics in Class 3. The appeal was in relation to a decision made by the UK Trade Mark Office to maintain the registration in respect of cosmetics.

    The main issue before the Court was not whether the registered mark had been used by its owner Laboratoires Goemar in relation to the goods or whether it had been used during the relevant five year period (it was accepted by both parties that there had been some use) but whether sales of just £800 worth of branded cosmetics during the relevant five year period to a UK agent constituted "genuine use" within the meaning of Section 46(1).

    Mr Justice Jacob declined to give final judgement on the issue and instead referred the question to the European Court of Justice. However, he did give his opinion on the matter. In the Judge's view, the very small amount of sales made by Goemar in respect of cosmetics did amount to "genuine use". In assessing the case he considered the development of the law on revocation and, in particular,

    • the position under the old law where companies used to engage in "trade mark protection programmes" involving the application of the registered trade mark to the product for the purpose of making a few sales under the mark and thereby maintaining the registration;

    • the "Merit/Nerit" case in which the trade mark Nerit was used in an attempt to validate a registration and thereby block the use of the mark Merit by another party (the use of Nerit was deemed not to be bona fide);

    • other cases including "Bon Matin TM" in which small scale use was deemed bona fide where it was shown that the proprietor intended to build up a business in the products under the mark and not simply to protect a trade mark registration.


    that the applicant to revoke's appeal in relation to the revocation of the Class 3 registration should be dismissed, the Judge said that in situations where the use is on a very small scale there is a greater onus on the proprietor to prove that the use is not mere "token" use, made with the "ulterior motive" of maintaining the trade mark registration.

    The nature of the use was another consideration for the Judge. He suggested that use in advertising rather than use on the products or their packaging might not constitute genuine use in the UK if it is not clear that the proprietor is directing the advertising at UK customers.

    Whilst use in advertising which was not obviously directed at UK customers might not constitute genuine use in the UK, the Judge was willing to take into account the wider picture in his assessment of the genuineness of Goemar's use. He suggested that the following factors should assist Goemar's case:

    • their £6000 worth of sales in relation to goods outside the specification of the registration (even though it was not shown that these sales were under the mark in question),

    • their endeavours to boost sales in their business (not specifically in relation to the goods of registration) by finding a new, "more effective" agent.


    The Judge in this case was opposed to the formulation of a de minimis rule because of the questions it raises as regards the amount, the location and the time of the use, yet these are the factors considered by OHIM under the practice established for assessing the proof of use of an opposing mark at the request of the CTM applicant.

    In the above appeal, an application to revoke a Class 5 registration for the same mark covering dietetic products for medical use was also considered. In this case, Mr Justice Jacob found that the use of the mark (again on a very small scale) in relation to dietary supplements which were expressly stated not to be medicines was not sufficient to maintain the registration. The products sold were aimed at healthy people with a view to keeping them healthy. They were therefore not for medical use.

     

    Comment

    It will be interesting to see if the ECJ agrees with Mr Justice Jacob's view that even very small sales of a branded product can save a registration for that brand, provided the use has been genuine. If this is the case, then it will become virtually impossible in many situations to conduct meaningful investigations with the aim of establishing the genuine use (or otherwise) of a registered mark. It is submitted that an investigation would hardly ever identify £800 worth of sales in the relevant five year period. Since, in the UK, once a revocation action has been filed, the registered proprietor must file evidence of use in order to maintain his registration, by far the best approach, in many circumstances, for those seeking to clear the trade mark path for a new branded product will be to apply to revoke the earlier registration and then see what evidence the registered proprietor puts forward to try to sustain his right.

    It is also suggested that if such very low sales are adequate to maintain a UK trade mark registration, then the proof of those sales should meet the same very stringent standards that are applied by OHIM when an opponent has to prove the use of his earlier mark in a CTM opposition. The rule should be that the lower the level of use of the mark, the more particularly and convincingly that use must be proved if an application to revoke a UK trade mark registration is to be resisted.